Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-5, 7-15, 17, and 19-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1, lines 3-4, recites “an acid-functional acrylic polymer prepared from a reaction mixture comprising isobornyl acrylate”. While there is support in original Claim 6 for an acid-functional acrylic polymer, and there is support in the present Specification for Polymers B-F, which are specific polymers prepared from a reaction mixture comprising isobornyl acrylate, there is not support in the present disclosure to recite any acid-functional acrylic polymer prepared from a reaction mixture comprising isobornyl acrylate.
Claims 3-5, 7-15, 17, and 19-22 are rejected as dependent on rejected Claim 1 above.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-4, 12-15, and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Oscar et al. (US 2014/0127499) in view of Gielens et al. (US 2005/0182186 A1).
Regarding Claim 1, 3-4, 15, Oscar discloses two part composition where part A includes acrylic tackifying resin and water (para 0022) and part B includes epoxy curing agent which includes an epoxy-functional component (para 0026). Oscar further discloses solvent is not required (para 0022) so the VOC, measured excluding water, may be 0 (i.e. below 420 g/L and below 400 g/L).
Oscar does not disclose the acid-functional acrylic polymer as claimed, but the acrylic tackifying resin is not limited. Oscar discloses the composition may be used as an adhesive (para 0013).
Gielens discloses tackifier resin made from acrylate such as isobornyl acrylate (paras 0008, 0016, and 0018) and having acid number of 0-300 mg KOH/g (para 0061) and weight average molecular weight of 2,000 to 25,000 daltons (para 0062). This resin has low residual monomer concentration, so it produces a clear product with low fogging (para 0030). The resin is used to modify acrylic polymers to produce adhesive compositions in various applications (para 0002-0005).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Oscar to incorporate the teachings of Gielens and produce the two part composition of Oscar using the tackifier resin of Gielens as the acrylic tackifying resin. Doing so would produce a clear product with low fogging.
Regarding Claim 12, Oscar in view of Gielens discloses all the limitations of the present invention according to Claim 1 above. Oscar does not disclose or require use of pigment. Therefore it would have been obvious to a person having ordinary skill in the art prior to produce the composition which is free of pigment.
Regarding Claim 13, Oscar in view of Gielens discloses all the limitations of the present invention according to Claim 1 above. Oscar does not disclose or require use of isocyanate. Therefore it would have been obvious to a person having ordinary skill in the art prior to produce the composition which is free of isocyanate.
Regarding Claim 14, Oscar in view of Gielens discloses all the limitations of the present invention according to Claim 1 above. Oscar further discloses part B is 100% epoxy and therefore does not comprise water (para 0026).
Regarding Claim 19-20, Oscar in view of Gielens discloses all the limitations of the present invention according to Claim 1 above. Oscar further discloses the epoxy component may comprise a combination of epoxy-functional compounds, including epoxidized polybutadiene acrylonitrile (i.e. epoxy-functional acrylic) (para 0026).
Regarding Claim 21, Oscar in view of Gielens discloses all the limitations of the present invention according to Claim 1 above. Oscar further discloses the two component coating is used on a substrate (para 0013).
Response to Arguments
In light of applicant’s amendment filed 02/27/2026, the 35 USC 103 rejections of record are withdrawn. New grounds of rejection are set forth above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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